# Twin Disc, Inc. v. United States

> United States Court of Claims · August 27, 1986 · 10 Cl. Ct. 713

URL: https://www.frixlaw.com/law-library/cases/6825760

## Case

- **Full name:** TWIN DISC, INC. v. United States
- **Court:** United States Court of Claims
- **Decided:** August 27, 1986
- **Citations:** 10 Cl. Ct. 713; 231 U.S.P.Q. (BNA) 417; 1986 U.S. Claims LEXIS 808
- **Precedential status:** Published
- **Opinion:** Opinion of the court by Seto
- **Judges:** Seto
- **Cited by:** 2 later opinions in the Frix Law Library

## Citator (automated)

- No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases.
- Full citator and citing cases: https://www.frixlaw.com/law-library/cases/6825760

## Opinion text

OPINION
SETO, Judge.
Plaintiff seeks recovery under 28 U.S.C. § 1498 of reasonable and entire compensation for the unauthorized use and manufacture, by or for the United States, of the inventions described and claimed in U.S. Letters Patent No. 3,328,961 (’961 patent), entitled “Multiple-Stage Hydraulic Jet Propulsion Apparatus For Water Craft”, and U.S. Letters Patent No. 3,405,526 (’526 patent), entitled “Multiple-Stage, Hydraulic Jet Propulsion Apparatus for Water Craft”. The ’961 patent was issued on July 4, 1967, on an application filed October 13, 1965, by patentee George R. Aschauer. The ’526 patent was issued on October 15, 1968, on an application filed March 1, 1967, by patentee inventor-plaintiff George R. Aschauer. Both the '526 patent and the ’961 patent were assigned to Twin Disc Clutch Company, Racine, Wisconsin, a corporation of Wisconsin.
*716 A lengthy four-week trial on the merits, including a subsequent two-day oral argument, was held addressing the issues of validity, infringement, double patenting, new matter, statute of limitations, sections 184, 185, and 102(b) violations regarding the 10 claims of the ’961 patent and the 6 claims of the ’526 patent. The accounting phase was deferred for a later trial, pending the determination of liability.
THE ’961 PATENT
The application for the patent in suit was filed on October 13, 1965, by inventor George R. Aschauer, on application Serial No. 495,640, and issued on July 4, 1967. The patent is entitled “Multiple-Stage, Hydraulic Jet Propulsion Apparatus for Water Craft”. The patent application describes a multi-stage hydraulic jet propulsion apparatus for waterborne craft wherein the second stage impeller is driven faster than the first stage impeller and wherein the housing surrounding these impellers converges toward the discharge end. (DX-97, p. 1). The device is shown in the sole drawing present in the ’961 patent, herein reproduced on the following page to facilitate reference.
The multiple-stage, hydraulic jet propulsion apparatus for a water craft consists of a propulsion unit with a housing having an intake 1 flushed with a bottom 2 of the water craft, with a discharge end 3, of the housing, extending through the stern 4 of the craft. (DX-97, p. 3). A Nozzle N extends rearwardly beyond the stern for receiving the stream of water from the housing from the boat, and discharging it to propel, steer, or reverse the direction of the boat. A power plant 5 drives the drive shaft 6, which in turn drives a gear reduction means 7, which in turn drives the drive sleeve 8 within the housing H.
A first stage impeller 10 is fixed to the sleeve 8 and driven thereby to form a low speed pump or impeller. In contrast, a second stage impeller 12 is fixed to and driven by the shaft 6 to form the high speed pump or impeller. The outer ends of the impellers are “free” or unsupported by a surrounding ring, and their ends are tapered rearwardly to define an impeller periphery which complements and is located adjacent to the internal shape of the housing in which it is mounted. (DX-97, p. 3). Moreover, the speed of the second stage impeller is greater than the speed of the first stage impeller, and the cross-sectional area of the impeller housing decreases in a direction approaching the discharge end. The patent application emphasizes that this combination, i.e., (1) the speed of the second stage impeller being greater than the first stage impeller, and (2) the impeller housing decreasing toward the discharge end, results in a very highly desirable high speed pumping unit with a correspondingly high pressure rise through the unit. (DX-97, p. 3, lines 1-5).
*717 [[Image here]]
Finally, fixed stator blades 14 are secured within the housing and are located behind the first stage impeller 10, and the hub 14A of these blades forms a support for the sleeve bearing 14B where the rear end of the drive sleeve 8 is rotatably mounted. Fixed stator blades 15 are fixed within the housing and directly behind the second stage impeller while the central hub 15A of these blades contains a sleeve bearing 15B which rotatably supports the rear end of drive shaft 6. These stator blades *718 act to “straighten out” the flow of water after it leaves the impellers, that is, they reduce the circular movement or spin of the water and direct it axially rearwardly. (DX-97, p. 4) The housing closely surrounds and complements the peripheral shape of the impellers. (DX-97, p. 4, lines 21-22).
The ’961 patent contains ten claims which read as follows:
1. A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising,
a housing having a forward intake portion for receiving water and a rearward discharge portion for discharging water rearwardly of the stem of the craft,
and said housing having a rearwardly converging portion, a first stage impeller mounted within said converging portion for being rotationally driven,
a second stage impeller mounted within said converging portion and located rear-wardly of and of smaller diameter than said first stage impeller and in co-axial alignment therewith,
said housing closely surrounding said impellers in complementary converging relationship therewith, the flow rate of the water through the first stage impeller being the same as that through said second stage impeller,
and means for rotationally driving said second stage impeller faster than said first stage impeller.
2. A unit as defined in claim 1 including stator blades fixed within said converging portion of said housing,
and located between said impellers,
and also rearwardly of said second stage impeller for straightening out the flow of water.
3. A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising,
a housing having an inlet flush with the bottom of said craft for receiving water,
and a rearwardly and also an upwardly inclined forward portion extending from said inlet,
said housing having an intermediate portion which converges rearwardly, and a rear discharge portion for discharging water rearwardly of the stern of the craft,
a first stage impeller and a second stage impeller both mounted within said converging portion for being rotationally driven,
said second stage impeller located rear-wardly of and of smaller diameter than said first stage impeller and in co-axial alignment therewith,
said housing closely surrounding said impellers in complementary converging relationship therewith,
the flow rate of the water through the first stage impeller being the same as that through said second stage impeller,
and means for rotationally driving said second stage impeller faster than said first stage impeller.
4. A unit as defined in claim 3 including stator blades fixed within said converging housing portion and located rearwardly of each of said impellers.
5. A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising,
a housing having an inlet flush with the bottom of said craft for receiving water,
and a forward portion extending rear-wardly and upwardly from said inlet,
said housing also having a rearwardly converging portion, and a rear discharge portion,
a nozzle connected to said discharge portion whereby said housing discharges water into said nozzle,
a first stage impeller and a second stage impeller both mounted within said converging portion for being rotationally driven,
said second stage impeller located rear-wardly of and of smaller diameter than said first stage impeller and in co-axial alignment therewith,
stator blades fixed within said converging housing portion and located rearwardly of each of said impellers,
*719 said housing closely surrounding said impellers in complementary converging relationship therewith,
the flow rate of the water through the first stage impeller being the same as that through said second stage impeller,
and means including an engine and gear reduction unit for rotationally driving said second stage impeller faster than said first stage impeller.
6. A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising,
a housing having a forward intake portion for receiving water and a rearward discharge portion for discharging water rearwardly of the stern of the craft,
a first stage impeller mounted within said housing for being rotationally driven,
a second stage impeller mounted within said housing and located rearwardly of said first stage impeller and in co-axial relationship therewith,
said housing closely surrounding said impellers in complementary relationship therewith,
the flow rate of the water through the first stage impeller being the same as that through said second stage impeller,
and means for rotationally driving said second stage impeller faster than first stage impeller.
7. A unit as defined in claim 6 including stator blades fixed within said housing and located between said impellers,
and other stator blades located rearwardly of said second stage impeller for straightening out the flow of water.
8. A unit as defined in claim 6 further characterized in that said housing has an inlet in the bottom of said craft,
and also a rearwardly and upwardly inclined forward portion extending from said inlet.
9. A unit as defined in claim 8 including stator blades fixed within said housing and located rearwardly of each of said impellers.
10. The propulsion unit as defined in claim 9 including a nozzle connected to said discharge portion whereby said housing discharges water into said nozzle,
and said means for driving said impellers includes an engine and gear reduction unit.
The Patent and Trademark Office cited four patents and one printed publication during the prosecution of the ’961 application: (1) Cake, U.S. Letters Patent No. 1,316,139; (2) Omohundro, U.S. Letters Patent No. 2,981,464; (3) Hamilton, U.S. Letters Patent No. 3,083,529; (4) Eaton, U.S. Letters Patent No. 3,143,857; and (5) Yachting Magazine, November 1979, Vol. 106, No. 5.
The ’526 patent, entitled “Multiple-Stage, Hydraulic Jet Propulsion Apparatus for Water Craft” was filed on March 1, 1967, on Application Serial No. 619,763, and issued October 15, 1968. Thus, the applications of both the ’961 patent and the ’526 patent were co-pending during the months of March, April, May, June, and during the first four days of July of 1967.
THE ’526 PATENT
The ’526 patent is entitled “Multi-Stage, Hydraulic Jet Propulsion Apparatus for Water Craft”, filed March 1, 1967, and issued October 15, 1968. Thus, the ’526 patent, the later patent by patentee As-chauer, was filed four months before the issuance of the ’961 patent, and therefore was co-pending with the ’961 patent application for a period of four months. The abstract of disclosure of the ’526 patent reads as follows: “Hydraulic jet propulsion apparatus for waterborne craft having multiple stages of different type pumps operating at different speed.” In its specifications under the title of “cross-reference”, the patentee states “The present invention is in the nature of an improvement over my co-pending U.S. Patent Application Serial No. 495,640 filed October 13, 1965, which is now Patent No. 3,328,961 (the ’961 patent) and entitled “Multiple Stage Hydraulic Jet Propulsion Apparatus for Water Craft.”
In summarizing his invention in the specifications, the patentee states:
*720 The present invention provides a multistage apparatus of the above type in which the first stage pump is of the axial flow type and acts as a supercharger pump; the second stage pump is of the mixed-flow pump and which constitutes the main pump for the apparatus and develops the great majority of the horsepower; in addition, the second stage pump is driven at a higher speed than the first stage pump. It is thus possible to utilize a slower speed, lower horsepower first stage pump for the supercharging or “packing” of water into the main second stage pump which in turn utilizes a higher allowable specific speed, resulting in a particularly efficient marine jet.
This combination of an axial flow pump feeding, that is, supercharging, a subsequent mixed-flow type of pump, with the latter mixed-flow pump turning at a considerably higher speed, provides a particularly efficient unit capable of using the slower speed and lower horsepower pump to initially pack the second stage, main pump of higher specific speed.
The ’526 patent contains six claims and one drawing, reproduced on a following page for easy reference.
The six claims of the ’526 patent are as follows:
(1) A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising a housing having a forward intake portion and a rearward discharge portion for discharging rearwardly of the stern of the craft; a first stage, axial flow pump in said housing; a second stage, mixed flow pump in said housing and located rearwardly of said first stage pump for receiving water therefrom; straightening vanes located rearwardly of each of said first and second stage pumps; and means for rotationally driving said pumps and said second stage pump faster than said first stage pump.
(2) A unit as defined in claim 1 further characterized in that said forward intake portion is of the diffusing type and has an inlet side and a discharge side, said inlet side being of smaller cross-sectional area than said discharge side.
(3) The unit as set forth in claim 1 further characterized in that said housing is of substantially cylindrical shape from the inlet side of said first stage pump to the inlet side of said second stage pump, and the said housing then diverges rearwardly from the inlet side of said second stage pump to the discharge side of said second stage pump, and then said housing converges rearwardly at its discharge portion.
(4) The propulsion unit described in claim 1 further characterized in that said means for rotationally driving said pumps includes an engine and gear reduction unit, said pumps being in co-axial alignment and driven by a sleeve and a shaft, said sleeve and shaft each being connected to said gear reduction unit for being rotationally driven.
(5) The propulsion unit described in claim 3 further characterized in that said means for rotationally driving said pumps includes an engine and gear reduction unit, said pumps being in co-axial alignment and driven by a sleeve and a shaft, said sleeve and shaft each being connected to said gear reduction unit for being rotationally driven.
(6) A multi-stage, hydraulic jet propulsion unit for waterborne craft comprising a water-conveying housing having a forward intake portion and a rearward, restricted discharge portion for discharging rear-wardly of the stern of the craft; said forward intake portion has an inlet side and a discharge side, said inlet side being of smaller cross-sectional area than said discharge side; a first stage, axial flow pump in said housing; a second stage, mixed flow pump in said housing and located rearwardly of said first stage pump for receiving water therefrom; said housing being of substantially cylindrical shape from the inlet side of said first stage pump to the inlet side of said second stage pump, and the said housing then diverges rearwardly from the inlet side of said second stage pump to the discharge side of said second stage pump and then said housing converges rearwardly at its discharge portion; *721 straightening vanes located rearwardly of each of said first and second stage pumps; and means for rotationally driving said pumps and said second stage pump faster than said first stage pump, said means for rotationally driving said pumps includes an engine and gear reduction unit, said pumps being in co-axial alignment and driven by a sleeve and a shaft, said sleeve and shaft each being connected to said gear reduction unit for being rotationally driven.
The specifications of the ’526 patent describe a hydraulic jet propulsion apparatus for waterborne craft in which the pumps of the different stages are of different types and operate at different speeds. The specification adds that the first stage pump is of the axial flow type and acts as a supercharger, while the second stage pump is of the mixed flow type and constitutes the main pump for the apparatus, developing the greater majority of the horsepower. Moreover, the second stage pump is driven at a higher speed than the first stage pump. The specification stresses that the combination of a first stage axial flow pump, with a subsequent second stage mixed flow type pump, with the second stage mixed flow pump revolving at a substantially higher speed, creates a particularly efficient hydraulic jet propulsion pump for a waterborne craft. The ’526 patent contains one drawing which is a longitudinal, cross-sectional view through a portion of a water craft embodying an apparatus of the present invention, with parts shown in section or broken away for clarity of drawings.
The drawing depicts a propulsion unit with a housing mounted with the forward end of its intake portion 1 flush with the bottom 2 of the water craft C and rearward, a restricted end 3 of the housing extending through the stern of the craft. An intake grill lg is depicted below the hull of the craft to prevent the ingestion of rocks. The forward intake portion 1 of the housing is of the diffusing type in which the water is diffused as it approaches the first pump, thereby decreasing its velocity and subsequently decreasing its pressure too. 1 A nozzle end extends rearwardly beyond the stern for receiving the stream of water from the housing in the boat and discharges it to propel, steer or reverse the boat.
A power plant V drives a lay shaft 5a which in turn drives a shaft 6 through a gear reduction unit 7. More specifically, the reduction unit through its gears 7a and 7b, drives the shaft 6 and through its gears 7c and 7d drives the sleeve 8 which is fixed by a key 8a to the gear 7d.
As noted earlier, there is a first stage pump 10 which is of the axial flow type, and is fixed to sleeve 8, and is driven thereby to form a relatively low speed pump or inducer which acts to supercharge or “pack” the water into a second stage pump 12. The first stage axial flow pump forces the water in a generally axial direction, with a minimum of water straightening being required. The main diameter of impeller pump 10 is indicated by the dotted line 11, the point of discharge being at the rear of the blade, as at 11a. The second stage impeller pump 12 is fixed to, and driven by, the shaft 6 to form the main, high speed pump of the apparatus. Its main diameter is indicated by the broken line 13. The second stage pump 12 is of the mixed flow type and operates at a higher speed than the first stage pump. The second stage pump, i.e., the mixed-flow pump, delivers the greater majority of horsepower in this multi-stage, hydraulic jet propulsion apparatus for water craft.
*722 [[Image here]]
Finally, thick straightening vanes are provided behind each of the impeller pumps for straightening out or relieving the spin of the water as it leaves each pump. For example, vanes 14 are secured within the housing and are located behind the first stage pump 10. These vanes are fastened together at their radially inner ends by the hub 14a which also forms a support for bearings 14b and 14c which rotationally support, respectively, the sleeve 8 and *723 drive shaft 6. The discharge portion 19 of the housing also has a series of straightening vanes 20 which act to receive the water from the second stage pump and reduce the circular movement or spin of the water.
The Patent and Trademark Office cited four patents during the prosecution of the ’526 patent application: (1) Eich, U.S. Letters Patent No. 1,402,059; (2) Stallman, U.S. Letters Patent No. 3,082,732; (3) Hamilton, U.S. Letters Patent No. 3,233,-573; and (4) Brill, U.S. Letters Patent No. 3,269,111.
THE ACCUSED DEVICE
The Propulsion Pumps of the SES 100A
Two classes of devices are accused of infringement. The first class is the propulsion pumps used in the experimental surface effect ship known as the SES 100A. The SES 100A was an experimental test craft built by the SES division of the Aero-jet General Corporation (SES Division, Ae-rojet) for the Joint Surface Effect Ship Project Office (JSESPO) of the Department of Commerce Maritime Administration and the Department of Navy under contract MA-4677. (DX-35, Stakee Tr.S.-1151, 1237a, Schlappi, Tr.S.-687-691, 709). The two propulsion pumps and one spare required by the SES 100A were designed and built by the Liquid Rocket Division of Aero-jet (Aerojet, Sacramento) under a subcontract for that purpose.
The SES 100A is a vessel with a platform that contains the operator’s cab, and wherein two side walls are attached to the bottom of the platform and curtains are connected to the side walls to form an air bubble chamber. The vessel somewhat resembles a catamaran. Large fans create an air bubble in the space between the side wall and curtains which support the vessel on a cushion of air. (DX-37a, Aschauer Tr.S.-100-102, 670-672). The SES 100A propulsion pumps are part of a propulsion system which is comprised inlets, conduits, pumps, and nozzles, with one system located in each sidewall. (PX-41, DX-37a, Aschauer Tr.S.-101-102, Cuthbert Tr.W-1730). The inlets were originally ram inlets in pods projecting from the sidewall, but are believed to have been changed between the initial construction and ultimate destruction of the SES 100A craft. (DX-37a, Schlappi Tr.S.-749-750, 883, Stakee Tr. S.-1225). Plaintiff did not introduce evidence on the construction of the inlet at any time. (Aschauer Tr.S-103, 105).
Each SES 100A propulsion pump has a complex curvaceous housing which has a single intake conduit preceding the pump elements. (PX-41; DX-85). A housing generally follows and is defined by the shape and function of the enclosed pump elements. (PX-41; Schlappi Tr.S.-764-765). The water entering the propulsion pump flows through a constant diameter passage from the interface of the propulsion pump housing with the intake system of the ship to the beginning of the first stage impeller. (Schlappi Tr.S.-751). The water flows through the propulsion pump in a passage defined by the outer housing in a hub located in the center of the propulsion pump. (PX-41). The first stage impeller has a number of blades which have a constant tip diameter causing the housing surrounding the first stage impeller to be cylindrical, but the hub diameter of the first stage impeller increases in a curved shape similar to a mixed-flow impeller causing the water passage through the first stage to have an increasing smaller volume. (Schlappi Tr.S.-764, 782). The blade height decreases from the inlet to the outlet of the first stage pump. The water flow through the first stage impeller is generally of the mixed-flow type because of the shape of the hub. (Schlappi Tr.S-764, 782). It is the rotation of the impeller and the force exerted by the blades which moves the water. (Schlappi Tr.S.-783). Such an impeller with a cylindrical tip diameter and increasing hub diameter is known as an “inducer.” (Schlappi Tr.S-764, 782). An inducer is a high performance, high technology impeller specifically selected to meet the performance requirements of the propulsion pumps that operate under conditions in which an axial flow pump could not satisfactorily perform. *724 (Schlappi Tr.S.-787-788). After the water leaves the first stage impeller, it enters the first stage stator. In the area of the stator, both the outer diameter of the housing and the diameter of the hub decrease in order to maintain a constant velocity of the water flowing from the discharge of the first stage impeller to the entrance of the second stage impeller. (Schlappi Tr.S.-764-765). The housing and hub narrow to a constriction or neck located between the first and second stage impeller. (Schlappi Tr.S.-765, Brandau Tr.W.-137-138). A nipple or take-off is located in this neck to remove approximately one percent of the water flow for use in engine coolant and other purposes. (PX-41; DX-85; Schlappi Tr.S.-753-754, 765, 855, 990-992).
The beginning of the second stage impeller is located at the neck of the housing. (Schlappi Tr.S.-765). The second stage impeller is a mixed flow impeller with a tip diameter and hub diameter increasing from the inlet to the outlet of the impeller. (Schlappi Tr.S.-765). The water flows outwardly at approximately a 45 degree angle through the second stage impeller and is discharged into the second stage stator. (Schlappi Tr.S.-765-766). The second stage is somewhat spherical in shape. (PX-41). The second stage stator is located at the maximum diameter of the second stage housing. (PX-41). Water is then discharged from the second stage stator into the nozzle. (PX-41). Finally, the maximum diameter of the second stage housing is smaller than the maximum diameter of the first stage housing. (Schlappi Tr.S-766; PX-41).
The Pumps of the PHM
The second class of accused devices is the pumps used in the foilborne propulsion system of the hydrofoil, missile carrying, Navy patrol vessel, designated PHM (hereinafter PHM). Within six years prior to the filing of this case, the Navy had received delivery of at least one PHM propulsion pump. The PHM vessels were built for the Navy by Boeing Corporation (hereinafter Boeing) under Contract No. N0024-72-C-0244 or similar contracts. The foil-borne propulsion pumps for the PHM were built for Boeing by . Aerojet Sacramento.
The PHM type vessel, one of which is named Pegasus and another Hercules, is over 100 feet long and carries a crew of 21 officers and enlisted men. (Stipulation; Brandau Tr.W.-129). The PHM vessel has two separate and distinct propulsion systems: (1) a hullborne system which propels the craft when it is moving on its hull as a waterborne vessel, and (2) a foilborne system which propels the vessel when it is “flying” on its hydrofoil wings. (PX-40; Cuthbert Tr.W.-1705). When the PHM vessel is in the flying mode, the bottom of the hull of the vessel is about 12 feet above the water. The only portion of the PHM vessel in the water is the hydrofoil wing and struts which are appended to the craft. (Cuthbert Tr.W.-1696, 1698). At this time, the vessel is functioning not as a water craft that depends on water buoyancy to remain afloat, but rather as a hydrofoil, in the flying mode, supported by the same forces which permit an aircraft to remain aloft. (Cuthbert Tr.W.-1698, 1711-1713).
When a PHM vessel is in the foilborne mode, water is taken into its propulsion system through two ram inlets located in pods in the leading edge of the hydrofoil wing. (DX-26, Davis Tr.W.-419, Cuthbert Tr.W.-1699). The water entering each ram inlet is conducted upwards approximately 20 feet through a conduit in the strut which changes several times in shape, direction and cross-sectional area. (DX-26; Cuth-bert Tr.W.-1710). The water flow from each strut merges at a “Y” intersection before it is conducted into the first stage impeller. (PX-51a; PX-58; DX-26; Davis Tr.W.-408-409, 424, Cuthbert Tr.W.-1723-1724). Compared to the SES 100A pump, the PHM pump is much larger and differs in the blade angles, the shape of its second stage, and other details not material to the consideration of the issues of infringement. For the purposes of the instant case, the operative portions of the SES 100A and PHM pumps, except for the water take-off point, can be considered the same. (PX-52a; Schlappi Tr.S.-773-774). A represen *725 tation of the PHM pump as marked at trial is clearly seen in PX-52a. For easy reference, it is reproduced on the following page.
Defendant has asserted a host of defenses to plaintiffs action, specifically: (1) invalidity; (2) noninfringement; (3) anticipation; (4) new matter; (5) section 184 and 185 violations; (6) statute of limitations; (7) section 102(b) public use; (8) obviousness: type double patenting; (9) section 102(b), on sale; (10) section 102(a); and (11) section 102(f). Since no findings of fact, however, have been proposed with respect to sections 102(b) on sale, 102(a), and 102(f), nor has defendant covered these issues in its post-trial brief, defendant is deemed to have waived these defenses. Bendix Corp. v. United States, 600 F.2d 1364 , 186 U.S. P.Q. 289, 291, 220 Ct.Cl. 507 (Ct.C1.1975). 2
*726 [[Image here]]
*727
Validity
It is now clear beyond peradventure that: (1) the presumption of validity is never annihilated, destroyed, or even weakened, regardless of what facts are in the record, e.g., even with the introduction of prior art more pertinent than that considered by the examiner; (2) it is clearly a statutory procedural device which assigns to the party asserting invalidity the burden of proving invalidity; and (3) the burden of persuasion is, and always remains, on the party asserting invalidity. ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1574-75 , 221 U.S.P.Q. 929, 930-31 (Fed.Cir. 1984); Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530, 1534 , 218 U.S.P.Q. 871, 875-76 (Fed.Cir.1983); Connell v. Sears, Roebuck & Co., 722 F.2d 1542 , 220 U.S.P.Q. 193 (Fed.Cir.1983); Medtronic, Inc. v. Cardiac Pacemakers, Inc., 721 F.2d 1563 , 220 U.S.P.Q. 97 (Fed.Cir.1983); Stevenson v. International Trade Commission, 612 F.2d 546, 551 , 204 U.S.P.Q. 276 , 281 (CCPA 1979); Solder Removal Co. v. International Trade Commission, 582 F.2d 628, 632-33 , 199 U.S.P.Q. 129, 132-33 (CCPA 1978).
As eloquently explicated by Chief Judge Markey in Stratoflex, 713 F.2d at 1534 :
The presumption, like all legal presumptions, is a procedural device, not substantive law. It does require the de-cisionmaker to employ a decisional approach that starts with acceptance of the patent claims as valid and that looks to the challenger for proof of the contrary. Thus the party asserting invalidity not only has the procedural burden of proceeding first and establishing a prima-fa-cie case, but the burden of persuasion on the merits remains with that party until final decision. The party supporting validity has no initial burden to prove validity, having been given a procedural advantage requiring that he come forward after a prima-facie case of invalidity has been made. With all the evidence in, the trial court must determine whether the party on which the statute imposes the burden of persuasion has carried that burden.
Introduction of more pertinent prior art than that considered by the examiner does not, therefore, “weaken”or “destroy ” the presumption. Nor does such introduction “shift” the basic burden of persuasion (emphasis added). The presumption continues its procedural burden assigning throughout the trial. Such introduction can, of course, facilitate the validity challenger’s carrying of that burden. It would require one supporting validity to come forward with countervailing evidence, as would the introduction of any evidence tending to establish invalidity. In the end, the question of whether all the evidence establishes that the validity challenger so carried his burden as to have persuaded the decision-maker that the patent can no longer be accepted as valid (footnote omitted).
The applicable statute, 35 U.S.C. § 282 (1982), in relevant part, reads as follows:
A patent shall be presumed valid. Each claim of a patent (whether in independent [or] dependent ... form) shall be presumed valid independently of the validity of other claims; dependent ... claims shall be presumed valid even though dependent upon an invalid claim. The burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity (emphasis added).
If that burden is not successfully carried by the party asserting invalidity, the trial court need only so state. It need not once more declare a patent “valid”, which was and still is valid, because the burden of proof of invalidity was not carried by the asserting party. Stratoflex, 713 F.2d at 1534 , n. 3 (citing 35 U.S.C. § 282 (1982)).
Moreover, in averring invalidity, defendant has the burden of explicating invalidity through- clear and convincing evidence, as opposed to merely the “preponderance of the evidence”. SSIH Equipment, S.A. v. International Trade Commission, 718 F.2d 365, 375 , 218 U.S.P.Q. 678, 687 (Fed.Cir.1983); Hughes Aircraft Co. v. United States, 717 F.2d 1351, 1361, *728 219 U.S.P.Q. 473, 480 (Fed.Cir.1983); Locate Corp. v. Ultraseal, Ltd., 781 F.2d 861 , 228 U.S.P.Q. 90 (Fed.Cir.1985). For example, the Federal Circuit opined in Panduit Corp. v. Dennison Manufacturing Co., 774 F.2d 1082, 1096 , 227 U.S.P.Q. 337 (Fed. Cir.1985), vacated and remanded, — U.S. -, 106 S.Ct. 1578 , 89 L.Ed.2d 817 , 229 U.S.P.Q. 478 (1986): “The statute mandating a presumption of validity, 35 U.S.C. § 282 , places the burden of proving facts compelling a conclusion of invalidity on the party asserting invalidity. This court has said the burden of proving facts compelling a conclusion of patent invalidity must be carried by clear and convincing evidence. ” “The role of the court is to determine whether the validity challenger carried that burden.” (citing SSIH Equipment, S.A. v. International Trade Commission, 718 F.2d 365, 375 , 218 U.S.P.Q. 678, 687 (Fed.Cir.1983) (emphasis added)).
ANTICIPATION
Anticipation, of course, requires the claimed subject matter to be identically disclosed or described in a prior art before a section 102 rejection is appropriate. In re Arkley, 455 F.2d 586 , 172 U.S.P.Q. 524 (CCPA 1982). Moreover, arguments that the alleged anticipatory prior art is “nonanalogous art” or “teaches away from the invention” or is not recognized as solving the problem solved by the claimed invention, is not “germaine” [germane] to a rejection under section 102. In re Self, 671 F.2d 1344, 1350-51 , 213 U.S.P.Q. 1, 7 (CCPA 1982). Therefore, if the claims of a patent are held to be invalid because they are anticipated by a single piece of prior art under section 102, evidence having to do with the level of ordinary skill in the art and the related objective criteria which the Supreme Court had so clearly enunciated in the Graham v. John Deere trilogy, simply do not apply. They need neither be introduced or considered; and they may not be used by way of arguing the validity of the patent. It is only when the attack on the claims of the patent is based on its obviousness over the prior art, that is, two or more pieces of prior art, that the level of ordinary skill in the art becomes critical and the other objective considerations come into significant play. Patent Law Perspectives, Vol. I, § 2.2(2), Matthew Bender, 1983. Thus, DX-11, the Italian patent, can anticipate claim 1 of the ’961 patent, without having to qualify as analogous prior art. The pertinent statute is 35 U.S.C. § 102 (b) (1982) which states in part: “[A] person shall be entitled to a patent unless ... the invention was patented or described in a printed publication in this or a foreign country ... more than one year prior to the date of the application for patent in the United States____” While DX-11, the Italian patent, does not have to qualify as analogous art, we find nevertheless, that it is “analogous” prior art, since it discloses a new configuration for screws or propellers on a ship to produce greater forward thrust to it, while also resolving the problems of cavitation. DX-11, p. 3, lines 16-23.
When we analyze the elements of claim 6 of the ’961 patent, via an anticipation claim chart, it can be clearly seen that each element of claim 6 of the ’961 patent reads on the Italian patent. See infra.
ANTICIPATION CLAIM CHART FOR CLAIM 6 OF THE ’961 PATENT Claim 6 Support in ’961 Corresponding Elements In (Elements)_Specification_Italian Patent_ A multi-stage hydraulic jet propulsion unit for waterborne craft comprising 1. a housing (H) having a forward in-This invention relates generally to hydraulic jet propulsion apparatus for waterborne craft, and more specifically, to multiple stage jets of this type. An object of the present invention is to provide a particularly efficient, multi-stage, hydraulic jet propulsion apparatus for waterborne craft. Referring now to the drawings, the propulsion unit with a housing is mounted with Figure 1 of the Italian patent (the sole drawing) shows a multi-stage (two propellers) propulsion unit for a waterborne craft. Figure 1 of the Italian patent shows á housing having a forward intake for re-
*729 Claim 6 (Elements)_ take portion (1) for receiving water and a rearward discharge portion (3) for discharging water rear-wardly of the stern of the craft 2. a first stage impeller (10) mounted within said housing (H) for being rotationally driven, 3. a second stage impeller (12) mounted within said housing (H) and located rear-wardly of said first stage impeller (10) and in co-axial alignment therewith, 4. said housing (H) closely surrounding said impellers (10, 12) in complementary relationship therewith. 5. The flow rate of the water through the first stage impeller (10) being the ANTICIPATION CLAIM CHART FOR CLAIM 6 OF THE ’961 PATENT Support in '961 Specification_ intake 1 flush with the bottom 2 of the watercraft C and the discharge end of the housing extends through the stem 4 of the craft in accordance with conventional practice. (Col. 2, lines 7-11.) A first stage impeller (10) is fixed to the sleeve 8 and driven thereby to form a low speed pump or impeller. (Col. 2, lines 22-23.) It will be noted, however, that subsequent portions of the housing as it extends rear-wardly from the intake side 19 of the first stage impeller may converge or decrease in cross-sectional area until it is rearward of the last impeller. (Col. 2, lines 51-55.) The outer ends of the impellers are “free” or unsupported by a surrounding ring, and these ends are tapered rearwardly to define an impeller periphery which complements and is located closely adjacent to the internal shape of the housing in which they are mounted, as will appear. (Col. 2, lines 26-31.) See also Figure 1, the sole figure. A second stage impeller (12) is fixed to and driven by the shaft 6 to form the high speed pump or impeller. The outer ends of the impellers are “free” or “unsupported by a surrounding ring”, and these ends are tapered rearwardly to define an impeller periphery which complements and is located closely adjacent to the internal shape of the housing in which they are mounted, as will appear. (Col. 2, lines 24-31.) It will be noted, however, that subsequent portions of the housing as it extends rear-wardly from the intake side 19 of the first stage impeller may converge or decrease in cross-sectional area until it is rearward of the last impeller. (Col. 2, lines 51-55.) The second impeller 12 may be of smaller diameter than the first stage impeller 10 and as previously mentioned both have a rearwardly converging or frusto-conical periphery formed by the ends of their blades. (Col. 2, lines 45-48.) The housing closely surrounds and complements the peripheral shape of the impellers. (Col. 2, lines 57-58.) These stators act to "straighten out” the flow of water after it leaves the impellers, that is, they reduce the circular movement or spin of the water, and direct it rearward-Corresponding Elements In Italian Patent_ ceiving water, and a rearward discharge portion for discharging water rearwardly of the stem. Figure 1 of the Italian patent, the sole drawing, shows a first stage impeller (propeller, screw or speed-phase propeller) mounted with a housing (called a hollow shaft) for being rotationally driven. (Page 3, English translation, lines 2, 11, 18 and 20.) Figure 1 of the Italian patent shows a second stage impeller (called a propeller, screw or a speed-phase propeller) mounted within said housing, (called a hollow shaft), located rearwardly of said first stage impeller and in co-axial alignment therewith. (Page 3, English translation, lines 2, 3, 4, 7, 8 and 18.) Figure 1 of the Italian patent (the sole drawing) shows its housing closely surrounding its two impellers (called propellers, or screws or speed-phase propellers) in complementary relationship therewith. Figure 1 of the Italian patent shows that its housing has no stators. Since there are no stators, and therefore nothing to impede the flow of water, the flow rate through
*730 ANTICIPATION CLAIM CHART FOR CLAIM 6 OF THE '961 PATENT Claim 6 Support in ’961 Corresponding Elements In (Elements)_Specification_Italian Patent_ same as that through the second stage impeller (12) and, 6. Means (5, 6, 7, 8, 14a, 14b, 15a, 15b) for rotationally driving said second stage impeller (12) faster than said first stage impeller (10). ly. (Since the stators merely “straighten out” the flow of water, and do not impede the flow of water in the housing, the flow rate of the water through the first stage impeller (10) must be the same as that through the second stage impeller (12). In accordance with the present invention, the RPM speed of the second stage impeller is greater than the first stage and furthermore the cross-sectional area of the impeller housing decreases in a direction approaching the discharge end. (Col. 2, lines 1-5.) A power plant 5 drives the shaft 6 and a gear reduction means 7 is also driven from the shaft 6 and it in turn drives the drive sleeve 8 within the housing H. A first stage impeller 10 is fixed to the sleeve 8 and driven thereby to form a low speed pump or impeller. A second stage impeller 12 is fixed to and driven by the shaft 6 to form the high speed pump or impeller. (Col. 2, lines 18-25.) More specifically, it is an object of the present invention to provide a multi-stage apparatus of the above-type in which the second stage impeller is driven faster than the first stage impeller and the housing which surrounds the impeller converges towards the discharge end thereof. The result is a particularly efficient propulsion unit. (Col. 1, lines 16-21.) the first stage impeller must be exactly the same as the flow rate through the second stage impeller. Two screws (1) and (2) with different diameters, dove-tailed (fitted) on two co-axial shafts (4) and (5), the latter of which is hollow and both of which can revolve at different RPMs. (Page 3, lines 2-4 of the English translation.) The power furnished by the motor (8) is taken from the output shaft of the reducer (7) and is transmitted to the shafts (4) and (5) by the gear torques (6) which have a different transmission ratio precisely in order to give us a different number of RPMs on the two shafts. (Page 3, lines 5-8, in the English translation.) It then envelops the screw (2) with the smaller diameter which however revolves at a larger RPM, which gives us the further speed increase. (Page 3, lines 11-13, English translation.) The “speed-phase propeller” involved in this invention is characterized by several screws operating in series and dove-tailed on co-axial shafts which can revolve at different RPMs. (Claim 1, page 4 of the English translation.) Figure 1 of the Italian patent, the sole figure, also depicts the two co-axial shafts (4) and (5), the latter of which (5) is hollow and both of which can revolve at different RPMs.
Support in the record for the chart can be found in the direct testimony of Dr. A. Douglas Carmichael, defendant’s expert witness. (Carmichael Tr.W.-1226-1234). Dr. Carmichael is a fulltime professor of power engineering in the Department of Ocean Engineering at the Massachusetts Institute of Technology (Carmichael Tr.W-806). He began teaching at MIT in 1970 and from 1964-70 was a research fellow in turbomachinery at Imperial College of Science and Technology in London. His resume, detailing his career, is DX-89. He is a member of the Society of Navy Architects and Marine Engineers. (Carmichael Tr.W.-839).
Obviousness
The applicable statute is, of course, 35 U.S.C. § 103 (Supp. II 1984):
A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvi *731 ous at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made. Subject matter developed by another person, which qualifies as prior art only under subsection (f) or (g) of section 102 of this title, shall not preclude pat-entability under this section where the subject matter and the claimed invention were, at the time the invention was made, owned by the same person or subject to an obligation of assignment to the same person.
Some of the more significant words mandated in this statute which delimit the obviousness issue are that we must: (1) determine what “would have been obvious ”, as opposed to “is obvious” as some courts have been prone to do; (2) address the subject matter as a whole, as opposed to-selecting individual elements; determining their individual obviousness; and holding the entire invention obvious; and (3) discuss the obviousness of the claimed “invention” rather than the obviousness of the patent. See Amstar Corp. v. Envirotech Corp., 730 F.2d 1476 , 221 U.S.P.Q. 649 (Fed.Cir.1984).
This court and one of its predecessors have cautioned against the use of hindsight:
It is difficult but necessary that the decisionmaker forgot what he or she has been taught at trial about the claimed invention and cast the mind back to the time the invention was made (often as here many years), to occupy the mind of one skilled in the art who is presented only with the references, and who is normally guided by the then-accepted wisdom in the art (emphasis added). W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1553 , 220 U.S.P.Q. 303, 313 (Fed.Cir.1983), cert. denied, 469 U.S. 851 , 105 S.Ct. 172 , 83 L.Ed.2d 172 (1984).
Therefore, it is absolutely imperative for a court to transport itself back in time to when the claimed inventions were made in 1965-1967 and determine obviousness from the perspective of one having ordinary skill in the art to which the subject matter pertains, having only the prior art references before him and unaided by the teachings of the patents in suit.
It is now clear beyond cavil that it is not permissible to first ascertain factually what the inventors did and then view the prior art in such a manner as to select from the random facts of that art only those which may be modified and then utilized to reconstruct the claimed invention. Interconnect Planning Corp. v. Feil 774 F.2d 1132, 1139-43 , 227 U.S.P.Q. 543 (Fed.Cir. 1985); Orthopedic Equipment Co., Inc. v. United States, 702 F.2d 1005, 1012 , 217 U.S.P.Q. 193, 199 (Fed.Cir.1983). This second principle was succinctly stated by the Federal Circuit in Orthopedic, 702 F.2d at 1012 , as follows:
The available art shows each of the elements of the claims in suit. Armed with this information would it then be nonobvious to this person of ordinary skill in the art to coordinate these elements in the same manner as the claims in suit? The difficulty which attaches to all honest attempts to answer this question can be attributed to the strong temptation to rely on hindsight while undertaking this evaluation. It is wrong to use the patent in suit as a guide through the maze of prior art references, combining the right references in the right way so as to achieve the result of the claims in suit. Monday morning quarterbacking is quite improper when resolving the question of nonobviousness in a court of law.
The touchstone case that sets the guidelines for a correct obviousness determination, is Graham v. John Deere Co., 383 U.S. 1, 17-18 , 86 S.Ct. 684, 693-94 , 15 L.Ed.2d 545 , 148 U.S.P.Q. 459 , 467- (1966), wherein the Supreme Court explicated:
While the ultimate question of patent validity is one of law, ... the § 103 condition, which is but one of three conditions, each of which must be satisfied, lends itself to several basic factual inquiries. Under § 103, the scope and con *732 tent of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy (citations omitted).
Thus, under the Graham analysis, a three part determination is set forth: (1) the scope and content of the prior art; (2) differences between the prior art and the claim at issue; and (3) the level of skill in the pertinent art. In addition, the Federal Circuit has added a fourth consideration to the above three part analogy—that of secondary considerations or additional evidence, which may serve as indicia of nonobviousness. In re Sernaker, 702 F.2d 989, 996 , 217 U.S.P.Q. 1, 7 (Fed.Cir.1983); Environmental Designs, Ltd. v. Union Oil Co., 713 F.2d 693 , 218 U.S.P.Q. 865 (Fed.Cir. 1983), cert. denied, 464 U.S. 1043 , 104 S.Ct. 709 , 79 L.Ed.2d 173 (1984). Pursuant to Semaker and Environmental Designs, it could be argued that the Graham analysis has now been amended to create a four pronged approach, rather than a three pronged approach, to the question of obviousness. Indeed, a four pronged method of analysis was succinctly summarized by the Federal Circuit in Loctite Corp. v. Ultraseal, Ltd., 781 F.2d 861 , 228 U.S.P.Q. 90, 97 (Fed.Cir.1985):
Obviousness under 35 U.S.C. § 103 is a question of law based on the underlying factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 17 , [ 86 S.Ct. 693 -94, 15 L.Ed.2d 545 ] 148 U.S.P.Q. 459, 467 (1966): (1) the scope and content of the prior art; (2) the differences between the prior art and the claims at issue; (3) the level of ordinary skill in the art; and (4) objective evidence of secondary considerations. See e.g., Simmons Fastener Corp. v. Illinois Tool Works, Inc., 739 F.2d 1573, 1575 , 222 U.S.P.Q. 744, 746 (Fed.Cir.1984), cert. denied, [— U.S. -] 105 S.Ct. 2138 [ 85 L.Ed.2d 496 ] (1985).
Analogous or Nonanalogous Prior Art
The cases in the federal appellate and district courts holding art to be either “analogous” or “nonanalogous” are legion. Nonanalogous prior art, as the term is generally used in patent law, means art too remote to be treated as “prior art”. In re Sovish, 769 F.2d 738, 741 , 226 U.S.P.Q. 771 (Fed.Cir.1985). The determination that a reference is from nonanalogous art, and therefore too remote to be considered prior art, is a two pronged question. First, the court must decide if the reference is within the field of the inventor’s endeavor. If not, the court must determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved. In re Pagliaro, 657 F.2d 1219, 1224 , 210 U.S.P.Q. 888 (CCPA 1981). For example, in Shelcore, Inc. v. Durham Industries, Inc., 745 F.2d 621, 625 , 223 U.S.P.Q. 584 (Fed.Cir.1984), the court stated:
Even were we to adopt Shelcore’s argument, that these references are not within the field of the inventor’s endeav- or, which we do not, the problem presented and overcome by the invention is basically the same: to permit the child to position his or her body in the same general orientation relative to the play surface or toy with his or her legs extending under the toy. Thus, the solutions disclosed in Kamlay and Wells are “reasonably pertinent to the particular problem with which the inventor was involved” (footnote omitted).
In speaking to the latter question, i.e., whether or not the problem presented and overcome by the reference is basically the same as the problem presented and overcome by the inventor, the Court of Customs and Patent Appeals has said “the test as to whether two references are from *733 nonanalogous arts is whether one seeking to solve a problem with respect to the embodiment of a reference in one art would be apt to seek the solution to said problem in the other art.” In re Shapleigh 248 F.2d 96,102 , 115 U.S.P.Q. 129 (CCPA 1957); see also In re Wilson, 439 F.2d 216, 219 , 169 U.S.P.Q. 307 (CCPA 1971) (one with ordinary skill in art seeking to improve a dolly for transporting and displaying bakery goods would look to features of other collapsible metal structures, including collapsible newspaper racks); In re Antle, 444 F.2d 1168, 1171-72 , 170 U.S.P.Q. 285 (CCPA 1971) (inventor presumed to have the “ability to select and utilize knowledge from other arts reasonably pertinent to his particular problem which would be expected of a man of ordinary skill in the art to which the subject matter pertains.”); In re Cademartori, 397 F.2d 992 , 158 U.S.P.Q. 261 (CCPA 1968) (claim for paint roller for rough surfaces; reference patent intended for cleaning purposes is relevant since it concerns a clearly common problem—the failure of sponge to conform itself to surface); In re Application of Warner, 379 F.2d 1011, 1014 , 154 U.S.P.Q. 173 (CCPA 1967) (claim for cosmetic lip liner with multiple colored materials with graduated increase in density towards center to provide contrasting colors and constant sharp edge; patents on crayons are relevant since “those of ordinary skill in the cosmetic pencil art, faced with the problem of maintaining a point on such a pencil, would be aware of or reasonably turn to the crayon art for the solution to the problem), cert. denied, 389 U.S. 1057 , 88 S.Ct. 811 , 19 L.Ed.2d 857 , reh. denied, 390 U.S. 1000 , 88 S.Ct. 1201 , 20 L.Ed.2d 101 (1968); In re VanWanderham, 378 F.2d 981 , 154 U.S. P.Q. 20 (CCPA 1967); In re Miller, 311 F.2d 955, 959 , 136 U.S.P.Q. 205 (CCPA 1963) (“one skilled in the blow molding plastic bottle producing art [would] seek a solution to the problem of maintaining uniform thickness of the substance by searching for an answer in the blow molding glass bottle producing art”).
Moreover, the trend clearly is to widen the scope of prior art that can be considered pertinent. Weather Engineering Corp. of America v. United States, 222 Ct.Cl. 322 , 614 F.2d 281, 286-87 , 208 U.S.P.Q. 939 (1980) (patents relating to airborne delivery and fusing systems are analogous art to invention in cloud seeding; “the days when inventions relating to locks are only made by locksmiths are past us. In today’s world, technological breakthroughs which result from the cross-fertilization of minds trained in different disciplines is common. Thus, it is unrealistic to assume or demand that the cloud seeder confine his reading to the Journal of Weather Modification____ Human knowledge cannot be compartmentalized or pigeonholed, and the courts have recognized this in evaluating the relevancy of art that comes before them in a 35 U.S.C. § 103 context”) (emphasis supplied).
In the instant case, defendant asserts that the field of the inventor’s endeavor, . i.e., the subject matter of the '961 and ’526 patents, generally relates to the field of fluid mechanics which includes turboma-chinery. More specifically, the turboma-chineries concerned are those turbomachin-eries known as pumps. Even more specifically, defendant states that these pumps are propulsion pumps which generate thrust as a result of energy put into the water by the rotation of pump impellers. Thus, defendant explains, performance of these propulsion pumps relies on the performance of their inlets, the ducting, their nozzles, and their impellers, all operating together.
As a fail-back position, defendant asserts that, even if turbomachinery propulsion pumps in general may not totally fall within the field of the inventor’s endeavors, they are reasonably pertinent to the particular problem with which the inventor was involved, i.e., the problem of cavitation. Cavitation is the formation of vapor bubbles in a liquid, usually resulting from the reduction in pressure, tending to reduce the performance of a pump by creating a cavity which has the deleterious effect of damaging the blade surface of an impeller.
*734 Plaintiff adversatively argues that the field of the inventor’s endeavor is specifically and more narrowly confined solely to “waterjet propulsion systems for waterborne craft”. Plaintiff’s Proposed Findings of Fact, p. 1. Plaintiff explains that these waterjet propulsion systems for waterborne craft, are particularly useful in propelling ships, such as hydrofoils, or surface effect ships, which operate at high speeds with their hulls partly or totally lifted from the water surface. A waterjet propulsion system for waterborne craft, therefore, according to plaintiff, is a device that is located mostly within the hull of a ship. Plaintiff explicates analogous prior art that must therefore of necessity contain three basic elements: (1) an intake duct that inducts fluid from outside the ship’s hull; (2) a pump for transmitting energy to this fluid; and (3) an exhaust duct and nozzle that guide the jet fluid back out of the hull. Plaintiff, however, does not contest defendant’s assertion that the particular problem with which the instant inventor was involved was the problem of cavitation in a pump. Indeed, inventor Aschauer himself states in his ’526 patent “with the velocity of water jets ahead of the first pump reduced, the pressure is greater in this area, and it is this pressure increase ahead of the first pump which is effective in reducing cavitation.” ’526 patent, col. 2, lines 46-50.
We agree, however, with the defendant’s assertion that the instant inventor’s field of endeavor is, in general, the area of turbo-machinery pumps, and at the very least, the area of propulsion pumps dealing with ships. (Carmichael Tr.W.-836-838; 883; 1326-27) (Brandau Tr.W.-309-313; 332-333; 379-80; 389) (Schlappi Tr.S.-804-805). Moreover, turbomachinery pumps, in general, would still qualify as analogous prior art because they face the same problems of cavitation as do the instant water jet propulsion pumps covered by the claims in the '526 and ’961 patents. (Brown Tr.W-2160)
Scope and Content of the Prior Art
Pursuant to the above discussion regarding analogous prior art, we find that the prior art in the instant case should be generally limited to turbomachinery propulsion pumps used to propel a ship through water. This is particularly true, since this area of scientific endeavor must deal with the problem of cavitation. The wide spectrum that the problem of cavitation covers in the world of pumps, however, was demonstrated by the following colloquy between plaintiff’s witness, Mr. Perry H. Brown and defendant’s counsel, on cross-examination:
MR. SPEVACK: You say you are a member of the American Society of Mechanical Engineers; is that correct? ANSWER: Yes.
MR. SPEVACK: Do you serve on any particular committees on the American Society of Mechanical Engineers? ANSWER: I served on local committees in the Los Angeles section, Fluid Machinery Division, Yes.
MR. SPEVACK: Have you ever attended any—or member of the same American Society of Mechanical Committees, if you know, the other people—well, first of all, do you know who the other committee members are on the committee that you are a member of?
ANSWER: Of course.
MR. SPEVACK: I should tell on the side, on some of the bar associations, the committees get so big that you don’t always even know exactly who. ANSWER: These are not like this.
MR. SPEVACK: Are they meeting type where you meet or is it correspondence type where you correspond for a committee meeting?
ANSWER: Well, the ones I was referring to have been types that we’ve met in a local area and that’s why you would know everybody on it.
MR. SPEVACK: The meetings that you attend, are they dealing with cavitation problems?
ANSWER: Yes, quite often.
MR. SPEVACK: And what type of equipment?
ANSWER: Could be in any type of equipment, anything from large pumps *735 like the Grand Coulee pumps or Metropolitan Aquaduct pumps from California, to rocket inducer pumps.
(Brown Tr.W.-2159-60)
The inventor Aschauer, in the instant case, was therefore charged, at the time of the invention, with knowledge of all the relevant prior art. Kimberly-Clark v. Johnson & Johnson, 745 F.2d 1437, 1454 , 223 U.S.P.Q. 603, 614 (Fed.Cir.1984). The prior art, in the instant case, included turbomachinery propulsion pumps dealing with ships, or water pumps dealing with the problem of cavitation. The inventor Aschauer was therefore presumed to have knowledge also of “those arts reasonably pertinent to the particular problem [i.e., cavitation] with which the inventor was involved.” In re Wood, 599 F.2d 1032, 1036 , 202 U.S.P.Q. 171, 174 (CCPA 1979) (citing In re Antle, 444 F.2d at 1171-72 , 170 U.S.P.Q. at 287-88).
Defendant avers that all the claims of the ’961 patent are obvious in view of the prior art. In advancing its theory that the claims of the ’961 patent and the ’526 patent are obvious in view of the prior art, defendant first focuses its attention on claim 6 of the ’961 patent, the broadest claim of the ’961 patent. Defendant’s Requested Finding of Fact and Conclusions of Law, p. 49. Defendant argues, alternatively, that even if claim 6 of the ’96Í patent were read so narrowly as to cover only hydraulic propulsion devices where both the pump and ducting were inside the vessel, a reading we believe would be erroneous, the subject matter as a whole would still have been obvious at the time the invention was made to a mechanical engineer with ordinary skill in the turbomachin-ery propulsion art as related to ships, from Italian patent DX-11, in view of Jensen, DX-4. Defendant explicates that the Italian patent, DX-11, teaches that all the elements of a ship’s propulsion pump are mounted outside the hull of a ship, such as in a structure known as a pump jet. Jensen, however, clearly teaches that such a pump jet can also be located inside a hull.
For example, on page 2, column 2, starting at line 83, Jensen teaches:
According to Figure 5, the apparatus is mounted inside the ship’s hull. The pump stator or housing 5 is fitted into an opening in the rear portion 15 of the hull, only the tubes 4 extending outside, and the foremost end of the housing is connected to an inlet tubing or funnel 16, which is provided with a branch having a stuffing box 17 through which the shaft 8 passes into the funnel.
Thus, Jensen, DX-4, discloses a hydraulic propulsion arrangement for ships, and further teaches that this hydraulic propulsion arrangement may be utilized both completely outside the hull of the ship (see Fig. 4 of Jensen), or completely inside the hull of the ship (Fig. 5 of Jensen). Defendant also adduces several other prior art patents not considered by the PTO: (1) Harris, DX-1, which teaches that one or more co-axial screw propellers may be utilized within the body of the hull of a vessel below the water line (see Figs. 3, 4 of the patent); (2) Stallman, DX-7, entitled “Water Jet Motor For Boats”, which teaches that a waterjet propulsion unit entirely within the hull of a vessel wherein the water enters through the inlet at the bottom of the hull of the vessel 51 passes through a first stage impeller section 55, through a first stage stator section 60, then through a second stage impeller section 56, through a second stage stator section 61, and then is discharged through nozzle 64 above the water line (see Fig. 7 of the Stallman patent); (3) Gongwer, DX-9, entitled “Jet Propulsion Device For Water Vehicle”, which also teaches one skilled in the art that the jet propulsion device may be encased within the hull of the ship (see Fig. 1 of the Gongwer patent); and (4) Eaton, DX-22, cited by the PTO, which also discloses that the jet propulsion device on a waterborne craft may be within the hull of the ship (see Fig. 1 of the Eaton patent).
We agree with defendant’s assertion, that claim 6 of the ’961 patent, even if it were to be read so narrowly as to cover only those hydraulic propulsion devices *736 wherein both the pump and ducting are inside the vessel, would still be obvious from the Italian patent, DX-11, in view of Jensen, DX-4 (see Fig. 5), or in view of Gongwer, DX-9 (see Fig. 1) or particularly in view of Stallman, DX-7, (see Fig. 7). Defendant’s Proposed Finding of Fact Number 96.
Defendant further asserts that the other claims of the ’961 patent merely recite, in increasing detail, specific features or elements that have been known to be used for that same purpose in the prior art propulsion pumps. Defendant maintains further, that each of these added features or elements performs its known function in a known manner to give a known result. For instance, defendant contends that claim 7 of the ’961 patent, which is dependent upon claim 6, merely adds the additional limitation that stators must be located between and behind each stage to straighten out the flow of the water. The use of stators in a multi-stage hydraulic jet propulsion unit for waterborne craft to straighten out the flow of water, according to defendant, has been known since at least the teachings of Harris (DX-1) which patent issued during the Civil War. Defendant also explicates that stators are disclosed for the same purpose in numerous other water jet propulsion patents, including but not limited to, Hamilton (DX-18), Eaton (DX-22), and the references cited by the Examiner. Plaintiff also admits that stators are taught by the prior art reference cited by the PTO, “Yachting Magazine”, November, 1959”, Ct.-l, page 71, Figure 1. See also “Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, sheet 5 of its Appendix, filed November 16, 1979, per Trial Judge Browne. Moreover, in the same sheet 5, plaintiff admits that stators are taught within the cylindrical housings of the Hamilton patent entitled “Hydraulic Jet Propulsion Apparatus for Waterborne Craft” (DX-18), and also in the Eaton patent entitled “Combined Forward and Reverse Steering Device for Jet Propelled Aquatic Vehicles”, (DX-22).
Since plaintiff has admitted that the prior art November 1959 article in the Yachting Magazine disclosed or taught stator blades that were fixed within said housing and located between said impellers and other stator blades located rearwardly of said second stage impeller for straightening out the flow of water, we find that claim 7 which merely adds stator blades to claim 6 (which we earlier found fully anticipated by the Italian patent, DX-11), would have been obvious at the time the invention was made to a person having ordinary skill in the art, i.e., a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships. For easier reference, Figure 1, which appeared in the November 1959 issue of Yachting Magazine, is reproduced below:
*737 [[Image here]]
Insofar as claim 8 of the ’961 patent is concerned, another claim which depends on claim 6, defendant asserts that its two limitations, i.e., a housing that has an inlet in the bottom of its craft, and a housing which has a rearwardly and upwardly inclined forward portion extending from said inlet, do not redeem claim 6 from being anticipated or at least obvious, since these two additional limitations are not only disclosed by the prior art, but work in a known way to achieve a known result. Defendant explicates that such an inlet structure in the bottom of a waterborne craft was disclosed by Hamilton (DX-18), Eaton (DX-22), Jensen (DX-4), Stallman (DX-7, see Fig. 7), and Gongwer (DX-16, page 451), and therefore would have been obvious at the time the invention was made to a person having ordinary skill in the art of turbomachinery propulsion pumps dealing with ships.
Plaintiff indeed admits that the two additional limitations added to claim 6 by claim 8, i.e., “said housing has an inlet in the bottom of said craft”, and “also a rear-wardly and upwardly inclined forward portion extending from said inlet”, are disclosed or taught by two prior art patents, and one prior art publication, all of which were before the Patent Office. These are: (1) the Hamilton patent (DX-18) entitled “Hydraulic Jet Propulsion Apparatus for Waterborne Craft”; (2) the Eaton patent, (DX-22) entitled “Combined Forward and Reverse Steering Device for Jet Propelled Aquatic Vehicles”, and (3) the Yachting Magazine, November 1959, (Ct.-1), Figure 1, supra. See sheet 5 of the Appendix of Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, 1979 per Trial Judge Browne.
Because plaintiff has admitted that the two limitations added by claim 8 of the ’961 patent were disclosed by three of the PTO’s prior art citations to be used in the same manner to achieve the same result, namely: Hamilton (DX-18); Eaton (DX-22); and the Yachting Magazine, November 1959, (Ct.-1), we find that the subject matter as a whole of claim 8 would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships.
Insofar as claim 9 is concerned, a claim which is dependent on claim 8, claim 9 repeats the same limitation set forth in earlier claim 7, i.e., “stator blades fixed within said housing and located rearwardly of each of said impellers”. As noted earlier, plaintiff admits that stator blades fixed within said housing and located rearwardly of each of said impellers is taught by *738 PTO’s prior art reference, the Yachting Magazine, November 1959, page 71. See Figure 1, supra. Thus, for the same reasons we found that claim 7 with its additional stator blade limitation did not redeem the obviousness of claim 6, we find that the added limitation in claim 9 does not redeem the obviousness of claim 8. In other words, we find that the subject matter as a whole of claim 9 would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships. See sheet 5 of the Appendix of Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, 1979, per Trial Judge Browne.
Defendant asserts that claim 10, which is dependent on claim 9, merely adds two well-known limitations in the prior art to the propulsion unit as defined in claim 9: (1) a nozzle connected to said discharge portion whereby said housing discharges water into said nozzle and (2) said means for driving said impellers includes an engine and gear reduction unit. Defendant contends that the same use of nozzles on water jet propulsion pumps for the same purpose is taught by Jensen (DX-4), Stall-man (DX-7), the Italian patent (DX-11), and the references cited by the Examiner in Hamilton (DX-18), and in Eaton (DX-22). Defendant also avers that the second limitation, a means for driving said impellers, which includes an engine and gear reduction unit, is taught by the Italian patent (DX-11) as well as the Westgard patent (DX-5).
Plaintiff admits that a nozzle connected to said discharge portion whereby said housing discharges the water into said nozzle is disclosed or taught by Hamilton (DX-18), disclosed and taught by Eaton (DX-22), and disclosed and taught by the Yachting Magazine of November, 1959. Plaintiff also admits that the means for driving said impellers which includes an engine and gear reduction unit is taught by Westgard (DX-5). See sheet 5 of the Appendix of Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, 1979, per Trial Judge Browne.
In view of plaintiff’s admittance that the two limitations added by claim 10 were disclosed in the prior art for the identical purpose, we hold that the subject matter as a whole in claim 10 would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships.
In regard to claims 1-5 of the ’961 patent, defendant asserts that they recite the same litany of elements as claims 6-10, with the additional limitation that the housing converges in the downstream direction. Defendant adds that despite this limitation obviously requiring the second stage impeller to be smaller than the first stage impeller, this additional feature is also recited by the patentee as an additional limitation. Defendant maintains that the Italian patent (DX-11) discloses both of these features in a propulsion pump for ships and that West-gard (DX-5) discloses the same elements for pumps in general. Defendant explains that the Italian pump (DX-11) converges rearwardly and therefore the second stage impeller is smaller in diameter than the first stage impeller. Finally, defendant concludes that the shape of the housing and the size of the impellers do not add patentable significance to the prior obvious propulsion units disclosed in claims 6-10 of the ’961 patent. Defendant then concludes that claims 1-10 of the ’961 patent are obvious from the Italian patent alone or in view of any one of or combination of Jensen (DX-4), Harris (DX-1), Stallman (DX-7), Westgard (DX-5) or the references cited by the PTO.
In analyzing claim 1 of the '961 patent, the sole additional limitation added by claim 1 that was not found within claims 6-10 of the ’961 patent, is “said housing having a rearwardly converging portion”. Plaintiff admits that the Italian patent (DX-11) teaches “a housing having a rear-wardly converging portion” but argues *739 that the Italian patent (DX-11) is nonanalo-gous prior art. Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, sheet 1, filed November 16, 1979, per Trial Judge Browne. Plaintiff appears to base its argument on the proposition that the Italian patent does not teach an “impeller”, but rather only discloses a propeller in a tube. Plaintiff further argues that the housing disclosed in the Italian patent is not a jet propulsion unit housing. Plaintiff advances the novel theory that the Italian patent, DX-11, is nonanalogous art because it does not depict a true waterjet propulsion system for waterborne craft, i.e., it does not eject its water above the level of the ocean.
Plaintiff’s arguments are unavailing. To begin with, nowhere in the claims of the ’961 patent, claims which have been very broadly written, is there an element or restriction that the water or fluid discharging from the rearward portion of the housing after passing the second stage impeller and stator blades must be emitted above the water line. Moreover, even in the plaintiff’s proposed findings of fact concerning this issue, plaintiff patently avoids mentioning the restriction that the water exiting the housing must exit above the water line. For instance in plaintiff’s Proposed Findings of Fact Number 4, plaintiff states in part:
a waterjet propulsion system for waterborne craft is a device which is located mostly within the hull of a ship. Therefore, it must, of necessity, have three basic elements: (1) an intake duct which inducts fluid from outside the ship’s hull; (2) a pump for transmitting energy to this fluid; and (3) an exhaust duct and nozzle which guide the jet of fluid back out of the hull. (Plaintiff's Proposed Findings of Fact No. 4).
In regard to plaintiff’s argument that the Italian patent does not teach an “impeller”, we cite McGraw-Hill, Dictionary of Scientific and Technical Terms, (2d ed. 1978), which defines an “impeller”, in mechanical engineering, to be a “rotating member of a turbine, blower, fan, axial or centrifugal pump, or mixing apparatus” (emphasis supplied). A “pump”, according to McGraw-Hill, in mechanical engineering, is a “machine that draws a fluid into itself through an entrance port, and forces that fluid out through an exhaust port.” A “propeller”, according to McGraw-Hill, in mechanical engineering is a “bladed device that rotates on a shaft to produce a useful thrust in the direction of the shaft axis.”
In studying the claims of the Italian patent, we notice that claim 3 of the Italian patent actually claims a rotating member of a turbine, the exact same type of language which McGraw-Hill defines as an “impeller”. Claim 3 of the Italian patent reads: “This ‘speed-phase propeller’ can work in an open current, like normal marine propellers, or it can be placed in a tube, like the propeller turbines, to make sure that the current will be guided by the walls” (emphasis added). Thus, if one were to utilize the teaching of the Italian patent whereby the rotating member, or propeller, was the rotating member of a turbine, that rotating member in a turbine, according to McGraw-Hill, is correctly called an “impeller”. If one were then to substitute the term “impeller” interchangeably with “screws” in the first paragraph of the specifications of the Italian patent, we would have a teaching of almost exactly, if not exactly, plaintiff’s invention: “The object of this invention, illustrated in plate I, essentially consists of two (impellers) (1, 2) with different diameters, dovetailed [fitted] on two co-axial shafts (4, 5), the latter of which is hollow and both of which can revolve at different RMP (sic).” As a matter of fact, plate I of the Italian patent, the sole drawing, teaches two impellers rotating at different speeds, as one way to solve the cavitation problem. (DX-11, line 22, page 3.) Moreover, McGraw-Hill, defines “propeller cavitation” in mechanical engineering as the “formation of vapor-filled and air-filled bubbles or cavities in water at or on the surface of a rotating propeller, occurring when the pressure falls below the vapor pressure of water.” McGraw-Hill also defines a “pro *740 peller pump” as an “axial flow pump”. And it defines an “axial flow pump”, in mechanical engineering, as a “pump having an axial flow or propeller-type impeller, used when maximum capacity and minimum head are desired.” Thus, an “axial flow pump” is also known as a “propeller pump”. 3 For the reasons discussed above, particularly in view of the fact that in mechanical engineering, a rotating propeller in a turbine is known in the art as a “impeller”, thus obviating plaintiffs argument that the Italian patent would not teach a mechanical engineer having ordinary skill in the turbomachinery propulsion art regarding ships that a propeller in a turbine can be considered to be an impeller, we find that the Italian patent (DX-11) is analogous art and that plaintiff’s countervailing arguments appear to be ipse dixit.
Claim 2 of the ’961 patent is dependent upon claim 1 and merely adds the well-known prior art stator blades to be used in the same manner to achieve the same result for which stator blades were used by mechanical engineers in the turbomachin-ery propulsion art dealing with ships years before the filing date of the ’961 patent. Moreover, plaintiff admits that stator blades were indeed taught and disclosed for the same use in the prior art. “Yachting Magazine,” November 1959 issue. See Figure 1, supra, Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, 1979, per Trial Judge Browne, sheet 5. We therefore find that the subject matter as a whole in claim 2 of the ’961 patent would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships. •
Claim 3 of the ’961 patent again merely adds the limitation that the intermediate portion of the housing converges rearwardly with the result that both the first and second stage impellers must be mounted in this converging portion wherein the second stage impeller, which must of course, be of smaller diameter than the first stage impeller, is located rearwardly of the first stage impeller, and in co-axial alignment therewith. Again, plaintiff admits that the Italian patent does disclose a housing that converges but rationalizes that the Italian patent is norianalogous art, because it merely discloses a first and second stage propeller in a converging housing wherein the second propeller is of smaller diameter than the first stage propeller, and rearward of the first stage propeller, and co-axially aligned, however, but does not disclose the use of impellers. Once more, we find that argument unpersuasive. As discussed supra, McGraw-Hill states that in the mechanical engineering art a propeller is a bladed device that rotates on a shaft to produce a useful thrust in the direction of the shaft axis. Moreover, such a rotating member in a turbine is known in the art as an impeller. Therefore, the Italian patent teaches a first stage impeller, and a second stage impeller, both mounted within a converging housing for being rotationally driven, wherein said second stage impeller is located rearwardly of and of smaller diameter than first stage impeller, and in co-axial alignment therewith. We therefore find that the subject matter as a whole claimed by claim 3 of the '961 patent, would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turboma-chinery propulsion pump art dealing with ships. See Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16,1979, per Trial Judge Browne, sheet 1. See also the sole drawing in the Italian patent (DX-11), supra.
Claim 4 of the ’961 patent, which is dependent on claim 3, once more merely adds the limitation regarding stator blades: “Stator blades fixed within said converging housing portion and located rearwardly of each of said impellers.” Basically, claim 4 *741 is almost identical to claim 2 and claim 7 of the '961 patent. Defendant argues that stator blades are taught and disclosed by the prior art cited by the PTO, Yachting Magazine, November 1959. In particular, defendant adverts our attention to Figure 1 of the Yachting Magazine, supra, wherein stator blades are depicted immediately following each impeller and located rearwardly of each impeller in order to straighten the flow of water. Plaintiff admits that stator blades are disclosed and taught in the Yachting Magazine, November 1959, prior art reference, in regard to claim 7 of the ’961 patent which reads: “A unit as defined in claim 6 including stator blades fixed within said housing and located between said impellers and other stator blades located rearwardly of said second stage impeller for straightening out the flow of water.” See Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, .1979, per Trial Judge Browne, sheet 5, claim 7. In regard to claim 4 of the ’961 patent, plaintiff offers the astounding proposition that despite the fact that the prior art reference Yachting Magazine, November 1959, does indeed disclose stator blades fixed within a housing and located between said impellers and other stator blades locating rearwardly of said second stage impeller for straightening out the flow of the water, it does not teach the use of stator blades when used in the same circumstance because the housing in claim 4 is converging rather than cylindrical. Again, we find this argument unpersuasive. A converging housing is clearly taught by the Italian patent (DX-11), see its sole drawing, supra, and it would be clear to a mechanical engineer that stator blades could be used to straighten out the flow of water from a first stage impeller and a second stage impeller in a converging housing as well as in a cylindrical housing, particularly where both impellers are on co-axial shafts. We therefore find that the subject matter as a whole in claim 4 would have been obvious at the time the invention was made to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art regarding ships.
Insofar as claim 5 of the ’961 patent, an independent claim, is concerned, it differs from claim 4 solely by the addition of the following limitation: “a nozzle connected to said discharge portion whereby said housing discharges water into said nozzle.” Defendant argues that such a nozzle used for the same purpose and in the same manner is disclosed by three prior art references, all three before the PTO: (1) Hamilton, the ’529 patent, entitled “Hydraulic Jet Propulsion Apparatus for Waterborne Craft”, (2) Eaton, the ’857 patent, entitled “Combined Forward and Reverse Steering Device for Jet Propelled Aquatic Vehicles”, and (3) Yachting Magazine, November 1959. Plaintiff acknowledges and admits that these three prior art references do indeed disclose “a nozzle connected to said discharge portion whereby said housing discharges water into said nozzle” for the same purpose and in the same manner. See Plaintiff’s Response to Defendant’s Motion to Compel Answers to Defendant’s Interrogatories 75-80, filed November 16, 1979, per Trial Judge Browne, sheet 3. Since plaintiff has admitted that this limitation, i.e., the nozzle connected to the discharge end, used for steering the waterborne craft, was disclosed by three prior art references, used in the same manner to perform the same result, we find that the subject matter as a whole in claim 5 would have been obvious at the time of the invention to a mechanical engineer having ordinary skill in the turbomachinery propulsion pump art dealing with ships.
Claims 6-10 of the ’961 Patent Invalid Because of New Matter
Defendant asserts that claims 6-10 of the '961 patent are invalid because they are not supported by the original disclosure of the ’961 patent, but rather are dependent on new matter. The relevant statutes regarding new matter are as follows:
35 U.S.C. § 112 (1982): Specification.
The specification shall contain a written description of the invention, and of the manner and process of making and *742 using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventory of carrying out his invention.
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
A claim may be written in independent or, if the nature of the case admits, in dependent or multiple dependent form.
Subject to the following paragraph, a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
A claim in multiple dependent form shall contain a reference, in the alternative only, to more than one claim previously set forth and then specify a further limitation of the subject matter claimed. A multiple dependent claim shall not serve as a basis for any other multiple dependent claim. A multiple dependent claim shall be construed to incorporate by reference all the limitations of the particular claim in relation to which it is being considered.
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of the structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
35 U.S.C. § 132 (1982)—Notice of Rejection; Reexamination
Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Commissioner shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention (emphasis added).
The following patent regulations are relevant in regard to new matter:
37 C.F.R. § 1.53 (1985): Serial Number, Filing Date, and Completion of Application.
(a) Any application for a patent received in the Patent and Trademark Office will be assigned a serial number for identification purposes.
(b) The filing date of an application for patent is the day on which (1) a specification containing a description pursuant to § 1.71 and at least one claim pursuant to § 1.75 and (2) any drawing required by § 1.81(a) are filed in the Patent and Trademark Office in the name of the actual inventor or inventors as required by § 1.41. No new matter may be introduced into an application after its filing date (§ 1.118) (emphasis added). 37 C.F.R. § 1.118 (1985): Amendment of Disclosure.
(a) No amendment shall introduce new matter into the disclosure of an application after the filing date of the application (§ 1.53(b)) (emphasis supplied). All amendments to the specification, including the claims, and the drawings filed after the filing date of the application must conform to at least one of them as it was at the time of the filing of the application (Emphasis supplied). Matter not found in either, involving a departure from or an addition to the original disclosure, cannot be added to the application after its filing date even though supported by an oath or declaration in accordance with § 1.63 or § 1.67 filed after the filing date of the application.
*743 (b) If it is determined that an amendment filed after the filing date of the application introduces new matter, claims containing new matter will be rejected and deletion of the new matter in the specification and drawings will be required even if the amendment is accompanied by an oath or declaration in accordance with § 1.63 or § 1.67.
In reading the prosecution history of the ’961 patent, one can see that in September 21, 1966, the patentee amended its specifications and added claims 6-10. (DX-97, pp. 10-12, entitled “Amendment Before Initial Application”). In reading independent claim 6 of the ’961 patent, which reads as follows:
A multi-stage hydraulic jet propulsion unit for waterborne craft comprising a housing having
a forward intake portion for receiving water and
a rearward discharge portion for discharging water rearwardly of the stern of the craft,
a first stage impeller mounted within said housing for being rotationally driven,
a second stage impeller mounted within said housing and located rearwardly of said first stage impeller and in co-axial (alignment) therewith, said housing closely surrounding said impellers in complementary relationship therewith,
the flow rate of the water through the first stage impeller being the same as that through said second stage impeller and,
means for rotationally driving said second stage impeller faster than said first stage impeller.
It is clear beyond peradventure that claim 6 is not restricted to either a converging housing or to locating the first or second stage impellers in the converging portion of the housing, as is claim 1. (DX-97; Ct.-100). Defendant contends that because claim 6 cannot be supported within the meaning of 35 U.S.C. § 112 by the original specifications, that added claim 6 and its dependent claims 7-10, as well as the amendments to the specifications made contemporaneously with the addition of claims 6-10, introduced new matter and should be struck. In particular, defendant asserts that the patentee’s September 21, 1966, amendment either deleted words or phrases of limitation from the original specifications or changed other words and phrases so as to remove limitations inherent in the original words or phrases. Defendant further contends that at the time claim 6 was added by this amendment, pat-entee also amended the specifications to provide the needed support for the new claims 6-10. Moreover, defendant contends that without the broadening by the patentee of the specification at this time, the specifications would have not supported the new broadened claims 6-10. Defendant further avers that this amendment altering the broadening of the specifications and adding new claims 6-10 changed the basic concept of the invention so as to include non converging housing shapes used in combination with different impellers. Defendant also asserts that this concept was not encompassed within the original application filed by the patentee. The patentee, according to defendant, explicitly stated that he wanted to avoid the problems associated with a cylindrical housing containing both impellers. 4 Yet, defendant asserts, the language used in the amended specifications would include a cylindrical housing. The particular line adverted to by defendant in the prosecution history is, “prior art propulsion units have of course used multiple stages but (on the other hand) these stages have been of the same size and speed as one another.” Thus, defendant argues, the patentee in trying to distinguish his invention from the prior art has stated that his invention is different from the prior art—and the patentee has characterized the prior art in saying that while the prior art has multiple stages, these multiple stages (of impellers) have *744 been of the same size. Defendant explicates that when the first and second stage impellers are of the same size, then ipso facto the cylindrical housing around those impellers are the same size and therefore the entire housing of these particular pump jets would be of the same size and therefore cylindrical.
Moreover, defendant points out that the patentee, in attempting to distinguish his invention over the prior art and to convince the Patent Office that his invention had intrinsic higher efficiency, stated in the prosecution history “in accordance with the present invention, the RPM speed of the second stage impeller is greater than the first stage impeller and furthermore the cross-section area of the impeller housing decreases in a direction approaching the discharge end. This results in a high speed pumping unit with a correspondingly high pressure rise through the unit.” Defendant argues, therefore, that the patentee has equated the necessity of having a decrease cross-sectional area at the discharge end with the highly desirable result obtained, of high speed pumping in the second stage impeller with a corresponding high pressure rise through the unit. This of course results, defendant explicates, in water being ejected out of the unit at a higher velocity and, therefore, pursuant to Newton’s first law causes, the waterborne craft to move through the water at a very high speed. 5 Defendant concludes its argument by stating that once the patentee, having used this argument to distinguish its invention from the prior art, he should be now estopped from either arguing that his claims be read so broadly as to cover just the opposite type of housing, that is, the type of housing wherein the impeller housing increases in a direction approaching the discharge end, and also should be estopped from subsequently adding new claims which allow the impeller housing to increase in a direction approaching the discharge end. Moreover, defendant concludes that the patentee should not have been able to strike out or delete those words in its prosecution history (while adding the much broader claims 6-10 which allowed the impeller housing to increase in a direction approaching the discharge end) thereby substantially broadening the specifications in order to support the newly-added broad claims 6-10 with a housing that was “rearwardly converging”. And that it was almost one year later, that the inventor finalized a second design with a housing that diverged in the second stage, and that the patent attorney then attempted to add new claims 6-10 of the ‘961 patent along with simultaneously changing the scope of the specification to support those new claims which allowed the housing to diverge.
Plaintiff countervails that the amendments to the specification, made by the patentee, which deleted the language in the specification that limited the impeller housing whereby it decreased in cross-sectional diameter in a direction approaching the discharge end, were unnecessary amendments. (Gholz Tr.O.-215). Plaintiff asserts, therefore, that the amendments merely clarified or made definite what was expressly or inherently disclosed in the original application or what conformed the specification to matters originally disclosed in the drawings or claims. Plaintiff cites In re Oda, 443 F.2d 1200 , 170 U.S.P.Q. 268 (CCPA 1971) and In re Peters, 723 F.2d 891 , 221 U.S.P.Q. 952 (Fed.Cir.1983), in support of its contentions. Plaintiff’s Response to Defendant’s New Matter Element Chart, filed by leave of judge, September 18,1985. Plaintiff’s arguments are unpersuasive.
In addressing the issue of new matter, the general rule, as simply stated in the concluding sentence of 35 U.S.C. § 132 , is that: “no amendment shall introduce new matter into the disclosure of the invention.”
37 C.F.R. § 1.118 (1985), quoted above, expands this basic rule excluding new matter and sets forth the general guideline. 37 C.F.R. § 1.118 (1985) expressly refers to *745 the specification, including the claims and the drawing. Although not specifically part of either the drawing or specification, the original claims in a patent application constitute a part of the “disclosure of the invention” within the meaning of 35 U.S.C. § 132 . See MPEP § 608.01(1).
“New matter”, that is, matter involving a departure from or an addition to the original disclosure (specification, drawings or claims) may only be added by the filing of a continuation-in-part application. See Triax Co. v. Hartman Metal Fabricators, Inc., 479 F.2d 951, 956-57 , 178 U.S. P.Q. 142 (2d Cir.), cert. denied, 414 U.S. 1113 , 94 S.Ct. 843 , 38 L.Ed.2d 740 (1973); In re Wright, 343 F.2d 761, 767 , 145 U.S.P.Q. 182 (CCPA 1965); Technicon Instruments Corp. v. Cole Instruments, Inc., 255 F.Supp. 630 , 150 U.S.P.Q. 227 (N.D.Ill. 1966), aff'd, 385 F.2d 391 , 155 U.S.P.Q. 369 (7th Cir.1967). Thus, the prohibition of “new matter” is a corollary to the rules regarding the filing of a complete application as a prima facie date of invention and of constructive reduction to practice.
When the patent examiner is faced with a new matter, pursuant to MPEP 706.-03(o), where the subject matter not disclosed (in the specifications, in the claims or in the drawings) in the original application is attempted to be added in the specifications and a claim directed thereto, such claim is rejected on the grounds that it recites elements without support in the original disclosure (in the specifications, in the claims, or in the drawings), under 35 U.S.C. § 112 , first paragraph, In re Rasmussen, 650 F.2d 1212 , 211 U.S.P.Q. 323 (CCPA 1981). Moreover, the MPEP rule warns the patent examiner to be on the alert to detect new matter. It states that 35 U.S.C. § 132 should be employed as a basis for objection to amendments to the abstract, specifications, or drawings, attempting when the patentee is attempting to add new disclosure to that originally disclosed on filing.
MPEP 608.04(a) also addresses new matter, that is, matter not in the original specification, claims, or drawings. It states that matter not in the original specification, claims, or drawings, is usually new matter. Depending upon circumstances such as the adequacy of the original disclosure, the addition of inherent characteristics such as chemical or physical properties, a new structural formula or a new use may be new matter. See Ex parte VanderWal, 1956 C.D. 11, 705 Off. Gaz. Pat. Office 5 (Physical Properties); Ex parte Fox, 1960 C.D. 28; 7761 Off. Gaz. Pat. Office 906 (New Formula); and Ex parte Ayres and Scott, 108 U.S.P.Q. 444 (Pat. Office Bd. App.1956) (New Use).
In the instant case, patentee subsequently amended its original application by altering the specification deleting the restrictive language therein which had specifically limited the impeller housing to having a cross-sectional area which decreased in a direction approaching the discharge end, to language which would allow just the opposite, that is, an impeller housing increasing in a direction approaching the discharge end. In addition, patentee at the same time added broader claims 6-10 which included this concept, basically changing the narrow concept of the earlier disclosed invention to a much broader concept covering later discovered designs. See, for instance, DX-42, wherein patentee’s attorney, in a letter to patentee, states “I have proposed an amendment in this application [DX-97, p. 10] which consists ... of more claims to cover your latest design____”
As noted earlier, patentee, in an attempt to distinguish his invention from the prior art, sought to impress the patent examiner by arguing that because the cross-sectional area of its impeller housing decreased in the direction of the discharge end, that this physical criteria resulted in a “high-speed pumping unit with a correspondingly high-pressure rise through the unit.” (DX-97, p. 3, lines 1-5.) The court, of course, recognizes that pursuant to Newton’s first law of physics, that the faster the water is ejected from a propulsion pump in a waterborne craft, the faster the waterborne craft will move in the water. One does not have to argue the point, that the faster a water- *746 jet pump is able to move a ship through the water, the more advantage that waterjet pump would have over other competing waterjet pumps.
In its subsequent amendment, however, patentee then, in order to support its broadened claims 6-10, which did not require that the “impeller housing decrease in a direction approaching the discharge end”, deleted that language in the original specifications which required that the “impeller housing decrease in a direction approaching the discharge end.” As can be seen by the following paragraphs hereunder, taken from the prosecution history of the file wrapper, wherein the bracketed words represent the original specification disclosure, and the underlined words represent amendment, it can be readily seen that the pat-entee substantially enlarged the scope of his specification to support the much broader claims 6-10 in violation of 35 U.S.C. § 132 :
The outer ends of the impellers are “free” or unsupported by a surrounding ring, and these ends are tapered rear-wardly to define an impeller periphery which complements and is located closely adjacent to the internal shape of the [rearwardly converging] housing in which they are mounted as will appear.
The second impeller 12 [is] may be of smaller diameter than the first stage impeller 10 and as previously mentioned, both have a rearwardly converging or frusto-conical periphery formed by the ends of their blades.
The rearwardly and upwardly inclined housing inlet portion 18 may be of generally constant cross-sectional area in a rearward direction. It will be noted, however, that subsequent portions of the housing as it extends rearwardly from the intake side 19 of the first stage impeller [converges or decreases] may converge or decrease in cross-sectional area until it is rearward of the last impeller. The housing then converges up to the discharge end 3 of the unit.
As one can readily see by the changes made by the patentee to the specification, the specifications were substantially enlarged to accommodate the broadened claims that were added, that is, claims 6-10 of the ’961 patent. DX-42. The court has searched long and hard to find any language in either the original objects, specifications, claims, or in the sole drawing, which even hints that the impeller housing should increase in a direction approaching the discharge end. There is no hint intrinsically or extrinsically that this should be the case. See the New Matter Element Chart on the following pages that set forth the court’s analysis of the original disclosure of the element whereby the “impeller housing decreases in a direction approaching the discharge end”, versus the substantial change, that is the direct opposite in configuration allowed by claim 6-10.
NEW MATTER ELEMENT CHART (’961 Patent) Set Forth in Shown in Discussed in “Original” “Original” “Original” Element_Objects_Drawings Specifications_ Claim_1 (Original) Said housing having a rearwardly converging portion (DX-97, p. 6) Yes, DX-97, p. 3, lines 3-5: “[T]he cross-sectional area of the impeller housing decreases in a direction approaching the discharge end” (emphasis supplied). This results in a high speed pumping unit with ». cor-Yes, DX-97, p. 9, see Figure 1 Yes, DX-97, p. 3, lines 23-25: “The outer ends of the impellers are ‘free’ or unsupported by a surrounding ring, and these ends are tapered rear-wardly to define an impeller periphery which complements and is located closely adjacent to the internal shape of the rearwardly converging housing” (emphasis supplied). Set Forth In “Original” Claims_ Yes, Claims 1-5: Claim 1: “. . . said housing having a rearwardly converging portion.” Claim 2: “A unit defined in claim 1 . . .”. Claim 3: “. . . said housing having an intermediate portion which converges rear-wardly . . .” Claim 4: “A unit as defined in claim 3 . . .”. Claim 5:“said housing also having a rearwardly converging portion . . .”.
*747 NEW MATTER ELEMENT CHART (’961 Patent) Element Set Forth in “Original” Objects_ Shown in “Original” Drawings A first stage impeller mounted within said converging portion (DX-97, p. 6) responding high pressure rise through the unit. Yes, DX-97, p. 3, lines 1-5: “[T]he RPM speed of the second stage impeller is greater than the first stage and furthermore the cross-sectional area of the impeller decreases in a direction approaching the discharge end.” (emphasis supplied). Yes, DX-97, p. 9, see Figure 1 Claim 6 (add- No No ed by amendment) which claim is not restricted to a converging housing. Discussed in “Original” Specifications Yes, DX-97, lines 18-19, 22-26; p. 4, lines 12-14: “A first stage impeller 10 is fixed to the sleeve 8 and driven thereby to form a low speed pump or impeller.” “The outer ends of the impeller are ‘free’ or unsupported by a surrounding ring, and these ends are tapered rearwardly to define an impeller periphery which complements and is located closely adjacent to the internal shape of the rearwardly converging housing in which they are mounted.” (emphasis supplied). “The second impeller is of smaller diameter than the first stage impeller 10 and as previously mentioned, both have a rearwardly converging or frusto-conical periphery formed by the ends of their blades.” (emphasis supplied). No. Added by subsequent amendment filed Sept. 21, 1966. DX-97, pp. 10-12; DX-97, p. 4, lines 17-20. “[T]he housing as it extends rearwardly from the intake side 19 of the first stage impeller [converges or decreases] may converge or decrease in cross-sectional area until it is rearward of the last impeller. . .”. (The bracketed words were deleted, removing limitation of a “converging housing.”) Set Forth In “Original” Claims Yes, Claims 1-5: Claim 1: “[A] first stage impeller mounted within said converging portion for being rotationally driven . . .”. Claim 2: “A unit defined in claim 1.” Claim 3: “[A] first stage impeller . . . mounted within said converging portion for being rotationally driven . . .”. Claim 4: “A unit as defined in claim 3 . . .”. Claim 5: “[A] first stage impeller . . . mounted within said converging portion for being rotationally driven . . .”. No. Added by amendment filed Sept. 21, 1966. DX-97, pp. 10-12.
Moreover, there was evidence in the record to support the assertion that the patentee’s intent was to broaden the specifications of the ’961 application by a subsequent amendment to support a new later-found concept. See DX-42-45.
In support of its contentions, plaintiff cites In re Oda, 443 F.2d 1200 , 170 U.S. P.Q. 268 (CCPA 1971), and states that “in Oda, the specification as filed mentioned ‘ferrous oxide’ in two places. In the reissue application, Oda, et al. sought to change the phrase ‘ferrous oxide’ to the more generic phrase ‘reducing agent’.” The board affirmed a rejection based on the contention that the replacement of the phrase ‘ferrous oxide’ by the broader phrase ‘reducing agent’ was new matter, but the court reversed. Using this case as an example, plaintiff argues that, even without broadening its specifications, it should have been able to broaden its claims *748 as it did in adding claims 6-10 since its original disclosure supports the broadened claims.
Plaintiffs argument is unavailing. The In re Oda case can be distinguished since, in Oda, the term “reducing agent” was already disclosed in the original specifications. See Plaintiff’s Response to Defendant’s New Matter Element Chart, filed by leave of judge September 18, 1985. In the instant case, contrariwise, the broadened language which would have allowed a “impeller housing increasing in a direction approaching the discharge end” never appeared in the specifications. Nor does this court find that it appeared intrinsically; it did not appear intrinsically because the pat-entee himself used this particular facet of his invention, i.e., “the impeller housing decreases in a direction approaching the discharge end”, to achieve the highly-desirable result of “a high-speed pumping unit with a correspondingly high-pressure rise through the unit”, thereby giving a ship the ability to travel at a high velocity. In order to view the new matter issue in proper perspective, the following colloquy which occurred at the oral argument held on September 19, 1985, is pertinent:
THE COURT: Alright. At this portion of the oral argument, we are to turn to the new matter issue. The new matter issue is covered in the numbered sections, both in the statute and in the rules, and the statute 132 states:
Whenever, on examination, any claim for patent is rejected or any objection or requirement made, the Commissioner shall notify the applicant thereof stating the reasons for such rejection or objection or requirement, together with such information references as may be helpful in judging the propriety of continuing the prosecution of his application.
And, if, after receiving such notice, the applicant persists in his claim for a patent with or without amendment, the application shall be re-examined. No amendments shall introduce new matter into the disclosure of the invention.
That’s in 35 U.S.C. § 132 . 37 C.F.R. 1.118 says:
No amendment shall introduce new matter into the disclosure of an application after the filing date of that application. All amendments to the specification, including the claims, and the drawings filed after the date of the application must conform to at least one of them.
The antecedent to “them” is either the specification, the claims, or drawings, as it was at the time of the filing of the application.
In addition, the court’s understanding of the working definition of the term “new matter” is disclosure material which is either required to support the claim or which would support new claims not set forth explicitly, implicitly, inherently or intrinsically in an application as of its effective filing date.
Now, the three questions the court has—will pose to the parties are these:
1. Where in the original disclosure— well, first of all, to set the premises, the defendant asserts that claims 6-10 of the ’961 patent are invalid because new matter was added to the original disclosure in violation of 132 and in violation of C.F.R. 1.118.
The three questions are this:
1. First, where, in the original disclosure of the ’961 patent application, i.e., the original specifications, drawings or claims of the '961 patent application, does the patentee disclose that the “subsequent portions of the housing as it extends rearedly [sic] from the intake side of 19 of the first impeller does not have to converge or decrease in cross-sectional area ... until it is wearward [sic] of the last impeller?”
2. Where, in the original disclosure of the ’961 patent application, i.e., the original specifications, drawings, or claims of the ’961 patent application, did the patentee disclose that ... the first stage impeller need not be mounted ... within a converging portion of the housing?
3. The same question again. Where, in the original disclosure of the ’961 patent *749 application, i.e., the original specifications, drawings, or claims of the ’961 patent application, did the patentee disclose that the second stage impeller need not be mounted in a converging portion of the housing?
It’s quite apparent by reading the original disclosure that these ideas are not there. So, it would appear that if they are there, they were there implicitly or intrinsically, and I would presume that’s what the plaintiff is asserting. Otherwise, I want to see exactly in black and white where it is there.
(Tr.O.-92-95.)
******
THE COURT: It’s the court’s understanding that the—if you look at DX-97, that the first—the original disclosure would be the first—
MR. SPEVACK: Nine pages.
THE COURT: —Seven, eight, first nine pages, which would include only five claims.
******
THE COURT: So that any new matter which ... [appears on] page ten [or thereafter] ... must be supported by either the drawing, the specifications, or the claims prior to page ten.
MR. SPEVACK: That is correct, your Hon- or.
THE COURT: In other words, some place from page[s] 1-9.
MR. SPEVACK: That is correct, your Hon- or.
******
THE COURT: And, if it’s not explicitly supported there, it at least has to be implicitly supported there.
MR. SPEVACK: Could be inherent language, could be enactment within the meaning of the words in there. (Tr.O.-97-98.)
******
(Tr.O.-lll-114.)
THE COURT: We’re ready for plaintiff. Please address, first, before you go into additional arguments where—let’s take them one at a time, page 3, DX-97, where ... [in] the original disclosure, and either the specifications, claims, or the drawings, within pages 1-9, [is the language] to support the housing not having to be rear-wardedly [sic] converging?
******
MR. MILLER: I recognize that the court is interested in hearing my answer to that question. I must respectfully submit, however, that it may not be the proper question.
******
THE COURT: Now, in claim 6, you have a claim added, which is not restricted to converging housing.
MR. MILLER: That’s correct.
THE COURT: What support do you have for that, either in the original disclosure, in either the specifications, the claims or the drawings?
MR. MILLER: The specification does not say that it has to be rearwardly converging.
THE COURT: Where in the specifications does it not say it has to be rearwardly converging?
MR. MILLER: It says that it is rearwardly converging. It does not say that it must be rearwardly converging. If the specification as originally filed had said the housing must be rearwardly converging then yes, I would concede that there’s a point to be made because by changing “must be” to “may be” is changing what is mandatory
THE COURT: Where does it say “may be” in page 3? (emphasis added).
MR. MILLER: It doesn’t say “may be” there, (emphasis added).
THE COURT: So, why are you using the example “may be” if it doesn’t say it? (emphasis added).
MR. MILLER: Well, the “may be” was added by amendment, sir. (emphasis added).
*750 THE COURT: Where—on page 3, where is the word “may be”? (emphasis added).
MR. MILLER: On page 3?
THE COURT: Yes. DX-97.
MR. MILLER: I guess that’s not added on page 3. It’s added on page 4.
******
MR. MILLER: The amendment—well, on page 3, the amendment eliminated the language “rearwardly converging.” (emphasis added).
THE COURT: Okay. What—by what right do you have to eliminate that language to make it broader, when you don’t have support in the original disclosure?. You see, it’s the court’s understanding that you can change a specification if the drawings or the claims, as originally disclosed, have disclosed that point.
So, you can change the specifications to conform to that which was disclosed, [in] the drawings or the claims.
MR. MILLER: Well, then, I must respectfully disagree with the court’s understanding.
******
THE COURT: What’s your definition of new matter?
MR. MILLER: What is my definition of new matter? In the context of this case?
THE COURT: No. In the context of any case. Tell me whether you agree with this statement or not: “Where the definition of a term added to the specification by amendment under rule 312 is not consistent with the use of that term in the application as filed, it ... [constitutes] new matter within the meaning of Section 35 U.S.C. 132, and must be disregarded in construing the scope of the patent claims.” (emphasis added).
Do you agree with that statement, sir? MR. MILLER: I don’t think it’s inconsistent.
******
THE COURT: Alright. Now that statement says, again, by the way, that’s [the] Dresser Industries case, it says: “where the definition of a term added to the specification by amendment under rule 312 is not consistent with that term in the application as filed, it constitutes new matter within the meaning of 35 U.S.C. 132 and must be disregarded in construing the scope of the patent claims.”
Now, the key essence of that statement is that [the new matter must not be] inconsistent with the use of the [original] term in the application. Now, where in the application—where in the disclosure’s original file [first nine pages of DX-97] does it talk about [the] housing [and] that [it] does not have to be rearwardedly [sic] converging?
MR. MILLER: It is not necessary for the specification as originally filed to say that the housing does not have to be rearwardly converging.
THE COURT: Even though the drawings and the—
MR. MILLER: That is correct, sir.
THE COURT: —claims nowhere suggest, either implicitly or intrinsically, that the housing does not have to be rearwardedly [sic] converging? (emphasis added).
MR. MILLER: Yes, sir. [It is not necessary.]
THE COURT: And, even if the specifications do not suggest either intrinsically or implicitly that the housing does not have to be rearwardly ... converging?
MR. MILLER: ... Yes, sir. [It is unnecessary.]
******
MR. MILLER: In re Peters, sir. The Federal Circuit, ____ reversed a rejection of all claims under 35 U.S.C. 112 and 251, stating that the rejection, and I quote, ‘erroneously confined Peters to the specific embodiment disclosed in the original patent.’ Now that’s 723 F.2d 891 , 221 U.S. P.Q. at 953, which, in turn, relied on In re Rasmussen, 650 F.2d 1212, 1215 .
THE COURT: The In re Peters case, sir, that you quote, says that if the broadened claim had been submitted originally, the broadened claims would have been sup *751 ported by the original disclosure. That’s what the In re Peters case says.
MR. MILLER: And, that’s what we’re saying exists here.
THE COURT: And, you’re asserting that your broader claim, even if submitted originally, would have been supported by your original disclosure?
MR. MILLER: Yes, sir.
THE COURT: Where in your original disclosure does it support the broader claims of your housing not having to be rearward-edly [sic] converging?
MR. MILLER: Your Honor’s question assumes that the specification must hav

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Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/6825760. Public record. Not legal advice.